Malawi: Malawi accedes to Madrid Protocol and prepares to implement new legislation

Please enter a maximum of 5 recipients. Use ; to separate more than one email address.

Recipient email(s):

Recipient name(s):

Email yourself a copy?

19 October 2018

Malawi deposited its instrument of accession to the Madrid
Protocol on September 25 2018, and the country will formally
become a member of the international trade mark registration
system on December 25 2018. Malawi has also posted the
necessary declarations to make it clear that the refusal period
will be 18 months, that mere intention to use is sufficient,
and that the recording of licences in the international
register has no effect in Malawi.

Malawi is a country that needs to specifically incorporate
international treaties into national law before they become
effective. There is no mention of the Madrid Protocol or
International Registrations (IRs) in present trade mark
legislation, the Trade Marks Act of 1958. There is, however,
extensive reference to international trade mark issues
– under the Madrid Protocol as well as the ARIPO trade
mark system – in draft new trade mark legislation that
was published a year ago. This draft legislation, the
Trademarks Bill 2017, will replace the current legislation in
its entirety.

We understand that the Trademarks Bill 2017 will come into
force soon, but there is no definite date. Assuming that it
becomes law on or before December 25 2018, all IRs designating
Malawi should be valid and enforceable in Malawi. If there is a
delay in the implementation of the new law, however, there
might be a period during which it is risky to file IRs in
Malawi. We will monitor the situation closely and report on
developments.

In addition to making provision for IRs, the Trademarks Bill
2017 will modernise trade mark law in Malawi in a number of
ways. For example, there will in future be a wider definition
of the term trade mark, there will be scope for protecting
service marks, there will be broader enforcement rights, there
will be criminal offences for trade mark infringement, and
there will be provision for actions based on unfair
competition. We understand that initially the regulations that
apply to the existing law will apply to the new law, but that,
eventually, new regulations will be promulgated.